Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 17 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
New claim 17 recited that the composition comprises a surface treatment agent and molybdenum particles that have not been surface treated nor contacted by the surface treatment agent.
Applicant appears to be supporting this limitation by applicant’s examples in which the molybdenum particles are not pretreated with a surface treatment agent; however, since claim 17 is a product claim, it is the examiner’s position that the molybdenum in the claimed resin composition would be surface-treated by the required surface treatment agent in the claimed resin composition.
Clarification is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 5-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kudou et al. (WO 2021/192680 A1, published 30 Sep. 2021, hereinafter Kudou) in view of Ohigashi (WO 2017/170643 A1, published 05 Oct. 2017, hereinafter Ohigashi) and further in view of Otsuka and Mizobe (JP 2016/074871 A, published 12 May 2016, hereinafter Otsuka) and further in view of Kushihara and Sumida (JP 2019/099755 A, published 24 Jun. 2019, hereinafter Kushihara).
Regarding claims 1, 5-7, and 9-17, Kudou teaches a resin composition for prepregs and metal foil-clad laminate boards for printed wiring boards comprising a cyanate ester compound, a filler, a molybdenum compound, and zinc oxide (Abstract). Kudou teaches the molybdenum particles are spherical (claim 6) and have an average particle size of 0.1 to 10 µm (claim 8). Kudou teaches the filler is silica, alumina (boehmite), or aluminum hydroxide (claim 11). Kudou teaches his resin composition comprises maleimide compounds and benzoxazine (benzoxadine) compounds (claim 13) and thermoplastic resins and elastomers (paragraph 0093). His resin further contains a silane coupling agent commonly used for the surface treatment of inorganic materials, and the silane coupling agent includes epoxy silane compounds and N-β-(N-vinylbenzylaminoethyl)-γ-aminopropyltrimethoxysilane hydrochloride (a vinyl silane compound) (paragraph 0090). Kudou teaches his resin comprises 0.2 to 30 parts of the molybdenum compound and 10 to 500 parts of filler per 100 parts of the resin components (claims 2 and 3). Kudou teaches the content of the zinc oxide is 0.1 to 5 mass% of the molybdenum compound particles (paragraph 0010). Kudou teaches his resin is used in a prepreg obtained by impregnating or coating a substrate (base member) with his thermosetting resin composition and then curing his resin into a resin sheet (paragraph 0098). Kudou teaches his resin sheet is applied onto a support, such as a copper foil or resin film (supporting film) (paragraph 0105). Kudou teaches a metal foil-clad laminate comprising a copper foil-clad laminate obtained by laminating and curing his prepreg and copper foil (paragraph 0110). Kudou teaches his resin composition is applied to a support and then partially cured (B-stage curing) (semi-cured) (paragraph 0108). Kudou teaches a printed wiring board including an insulating layer and a conductive layer formed on the surface of the insulating layer, wherein the insulating layer includes a cured product of his resin composition and a metal foil-clad laminate used as a printed circuit board by forming a predetermined wiring pattern on his insulating layer (paragraph 0113).
Based on the amounts of each of the components taught by Kudou, the total content of the molybdenum and filler components is 9.2 ((0.2+10)/(100+5%*0.2+0.2+10)) to 83.7 parts ((30+500)/(100+0.1%*30+30+500)) per 100 parts of the resin composition.
Based on the amounts of molybdenum compound and filler taught by Kudou, the content of the molybdenum compound is 0.04 (0.2/(0.2+500)) to 75 parts (30/(30+10)) per 100 parts of the combined amounts of molybdenum compound and filler.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected relative amounts of molybdenum compound, filler, and zinc oxide from the overlapping portions of the ranges taught by Kudou because overlapping ranges have been held to be prima facie obviousness.
Given that Kudou teaches resin contains a silane coupling agent and Kudou teaches that the silane coupling agent is one that is specifically used for the surface treatment of inorganic materials (paragraph 0090), and his molybdenum compound is an inorganic material, it is the examiner’s position that the molybdenum compound would be surface treated by the silane coupling agent taught by Kudou in his resin composition.
However, Kudou does not disclose that his molybdenum is pretreated with the silane coupling agent; therefore, Kudou also teaches embodiments in which his molybdenum compound is not surface treated before being blending into his composition.
Kudou does not disclose that the benzoxazine (benzoxadine) compound has an allyl group.
Ohigashi teaches a thermosetting resin composition for prepregs, metal-clad laminates, and printed wiring substrate, in which his resin composition comprises a benzoxazine (benzoxadine) having an allyl group (Abstract and page 33, 2nd paragraph).
Given that Kudou and Ohigashi are drawn to thermosetting resin compositions for prepregs and printed wiring boards, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a benzoxazine with an allyl group as taught by Ohigashi as the benzoxazine in the resin composition taught by Kudou. Since Kudou and Ohigashi are both drawn to thermosetting resin compositions for prepregs and printed wiring boards, one of ordinary skill in the art would have a reasonable expectation of success in using a benzoxazine with an allyl group as taught by Ohigashi as the benzoxazine in the resin composition taught by Kudou. Further, Ohigashi teaches the curing properties of the thermosetting resin composition is improved by using benzoxazine compounds containing a group with an unsaturated double bond as a functional group, and an allyl group is preferred (page 7, 2nd paragraph).
Kudou in view of Ohigashi teaches a resin composition comprising maleimide compounds and allyl-group containing benzoxazine (benzoxadine) compounds.
Kudou in view of Ohigashi does not disclose the ratio of the amount of allyl-group containing benzoxadine compound to the amount of maleimide compound.
Otsuka teaches a resin composition for copper-clad laminates in which the amount of benzoxazine compound having an allyl group is 0.1 to 100 parts mass based on 100 parts mass of the bismaleimide compound (Abstract). That is, the ratio of benzoxazine to bismaleimide is 0.001 to 1.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected a ratio of benzoxazine to bismaleimide from the overlapping portion of the range taught by Otsuka because overlapping ranges have been held to be prima facie obviousness.
Given that Kudou and Otsuka are drawn to thermosetting resin compositions containing maleimide compound and benzoxazine compound for metal-clad laminates, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the ratio of benzoxazine to bismaleimide as taught by Otsuka in the resin composition taught by Kudou in view of Ohigashi. Since Kudou and Otsuka are both drawn to thermosetting resin compositions containing maleimide compound and benzoxazine compound for metal-clad laminates, one of ordinary skill in the art would have a reasonable expectation of success in using the ratio of benzoxazine to bismaleimide as taught by Otsuka in the resin composition taught by Kudou in view of Ohigashi. Further, Otsuka teaches his resin with this ratio of the amount of allyl-group containing benzoxazine compound to the amount of bismaleimide compound results in a resin composition with low-temperature curing and a cured product with excellent heat resistance (paragraphs 0005-0006) and reduces cracking in impregnated fiber-based laminates without impairing solvent-free impregnation, prepreg tackiness, drape, or storage stability, and exhibits less weight loss when exposed to high temperatures for extended periods, i.e., has improved heat resistance, excellent thermal decomposition properties, low thermal expansion, high glass transition temperature, low dielectric properties, copper foil adhesion, solder heat resistance, flame retardancy, and drillability (paragraph 0028).
Additionally, Kushihara teaches a thermosetting resin composition comprising 30-75 parts mass of maleimide compound and 5-50 parts by mass of benzoxazine compound (Abstract). That is, Kushihara teaches a ratio of benzoxazine to bismaleimide of 0.067 (5/75) to 1.67 (50/30), which has a wide range of overlap with both the teaching of Otsuka and the claimed ratio.
Kushihara teaches that lower amounts of benzoxazine reduces the curability of the resin composition, and higher amounts of benzoxazine reduces the solubility of the maleimide compound and increase the water absorption rate of the cured product (paragraph 0032).
Regarding claim 8, Kudou in view of Ohigashi and further in view of Otsuka and further in view of Kushihara teaches the elements of claim 7, and the claim is met by Kudou in view of Ohigashi and further in view of Otsuka and further in view of Kushihara, given that Kudou discloses the use of a surface treatment agent (paragraph 0090), and given that claim 8 only further limits an optional limitation of claim 7.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kudou et al. (WO 2021/192680 A1, published 30 Sep. 2021, hereinafter Kudou) in view of Ohigashi (WO 2017/170643 A1, published 05 Oct. 2017, hereinafter Ohigashi) and further in view of Otsuka and Mizobe (JP 2016/074871 A, published 12 May 2016, hereinafter Otsuka) and further in view of Kushihara and Sumida (JP 2019/099755 A, published 24 Jun. 2019, hereinafter Kushihara) and further in view of Nishimura (JP 2020/158705 A, published 01 Oct. 2020, hereinafter Nishimura).
Regarding claims 3-4, Kudou in view of Ohigashi and further in view of Otsuka and further in view of Kushihara teaches the elements of claim 1, and Kudou teaches his resin composition comprises thermoplastic resins and elastomers (paragraph 0093).
Kudou in view of Ohigashi and further in view of Otsuka and further in view of Kushihara does not disclose the molecular weight nor the type of thermoplastic resin or elastomer.
Nishimura teaches a cured resin composition for printed wiring boards comprising a maleimide compound, an allyl group-containing benzoxazine compound, and a high molecular weight styrene copolymer with a molecular weight of 5,000 to 100,000 (Abstract and paragraphs 0120, 0164, and 0173).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected the molecular weight of the styrene copolymer from the overlapping portion of the range taught by Nishimura because overlapping ranges have been held to be prima facie obviousness.
Given that Kudou and Nishimura are drawn to thermosetting resin compositions containing maleimide compound, benzoxazine compound, and thermoplastics and/or elastomers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a polystyrene copolymer of a molecular weight taught by Nishimura as the thermoplastic and/or elastomer in the resin composition taught by Kudou in view of Ohigashi and further in view of Otsuka and further in view of Kushihara. Since Kudou and Nishimura are both drawn to thermosetting resin compositions containing maleimide compound, benzoxazine compound, and thermoplastics and/or elastomers, one of ordinary skill in the art would have a reasonable expectation of success in using a polystyrene copolymer of a molecular weight taught by Nishimura as the thermoplastic and/or elastomer in the resin composition taught by Kudou in view of Ohigashi and further in view of Otsuka and further in view of Kushihara. Further, Nishimura teaches by incorporating component a polystyrene copolymer with this molecular weight in his resin composition, the stress of the resin composition is relieved, and as a result, it becomes possible to obtain a cured product with improved brittleness (paragraph 0119).
Response to Arguments
Applicant's arguments filed 17 Jul. 2026 have been fully considered, but they were not persuasive.
Applicant amended claim 1, cancelled claim 2, and added claim 17.
Applicant argues that the Office Action mailed 21 Apr. 2026 did not present a prima facie case of obviousness with respect to the combination of newly added features of the amended claims; thus, the rejections should be withdrawn.
However, the amended claims merely combine claims 1 and 2; both of which were rejected in the cited Office Action. No newly added features were added to amended claim 1 besides the limitations in the cancelled claim 2.
Applicant argues that the patentability of the claims is supported by unexpected results and advantages.
However, the data is not persuasive given that it is not commensurate in scope with the scope of the present claims. Specifically, the data utilizes two specific molybdenum compounds in a single amount of 58 parts, two specific maleimide compounds in total amounts ranging from 38-66 parts, one specific allyl-group containing benzoxadine compound in amounts ranging from 14 to 42 parts, and three fillers in a single total amount of 154 parts; while the present claims broadly recite any molybdenum compound in any amount, any maleimide compound, any allyl-group-containing benzoxadine compound, and a filler of any type and of any amount, with the only compositional limitation being the mass ratio of B2/B1.
Examiner does recognize the advantages shown by the examples and data of the current invention; however, applicant has not provided evidence that these advantages would occur over the broad range of claimed compositions.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is 571-272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN VINCENT LAWLER/
Primary Examiner, Art Unit 1787
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